Filing a trademark application is easy… registering a protectable trademark is not.

Sure, you could pay LegalZoom $169 plus filing fees to file a trademark application for you, or try your own hand at it.

VCLM146_Group_289x200But merely completing a trademark questionnaire is not the same as registering a protectable trademark. Likewise, LegalZoom’s “basic federal direct-hit search for similar trademarks” does not insure that your trademark application will be approved by the Trademark Office or avoid being opposed by another company.  Here are some of the potential pitfalls of filing your own trademark application (or hiring someone like LegalZoom to fill out the application for you):

  • Not all trademarks are created equal. The strength of a trademark varies, most importantly on how descriptive it is in relationship to the goods or services. Saving money now only to find out later that you invested in a weak trademark, is detrimental to your business. We can help you assess the strength (and consequently the protectability) of your trademark so that you can invest in new marks more prudently.
  • Trademark searching depends on the circumstances. There are times when a “basic federal direct-hit search for similar trademarks” is appropriate. But by definition, a direct-hit search only covers direct-hits. Trademark rejections most often come from sound-alike or look-alike marks that would not be found by a “direct-hit” search. We can help you evaluate the proper scope of search for your situation: a no-search, a basic search, or a more comprehensive search. One size does not fit all.
  • Knowing what to register is not always easy. Your name? Your slogan? Your logo? Some combination? Even if you were to hire LegalZoom to complete your trademark application, you will still need to tell them what mark you want to register. The answer is not always clear and typically depends on your situation and how close is the next mark to yours. We can help.
  • Properly classifying your goods/services can be tricky. Once filed, you cannot change how you classify your goods and services. You can narrow your scope, but you cannot change from “t-shirts” to “on-line retail sales of clothing.” If you get it wrong on your application, you will likely have to start the process over again. This will likely cost you a year in time, another set of filing fees, and you will likely have to pay an attorney to explain why you need to do it over.
  • Filing for a trademark is the beginning, not the end.  Often, the U.S. Trademark Office comes back with an objection to your mark as filed, perhaps because it might be deemed too descriptive, or because the Examiner may feel it is too similar to another mark.  Perhaps the example of how you use the mark in commerce, is not sufficient.  In that case, you will need to respond with a carefully researched legal brief setting forth why your mark should be permitted to issue.

Get it right the first time by hiring us. We have registered thousands of trademarks for our clients and we know how to help you register a mark worth protecting, and how to grow, defend and enforce those marks accordingly.

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